Passionate about IP! Since June 2003 the IPKat has covered copyright, patent, trade mark, info-tech, privacy and confidentiality issues from a mainly UK and European perspective. The team is Eleonora Rosati, Annsley Merelle Ward, Neil J. Wilkof, and Merpel. Nicola Searle is currently on sabbatical. Read, post comments and participate! E-mail the Kats here

The team is joined by GuestKats Mirko Brüß, Rosie Burbidge, Nedim Malovic, Frantzeska Papadopolou, Mathilde Pavis, and Eibhlin Vardy

Thursday, 31 January 2013

The smooth operation of an intellectual property weblog owes as much to chance as to good organisation. How often does it happen that there's no exciting news to report at all, and all the Kats are checking their emails and Twitter accounts at sixty-second intervals in the hope of being first to the next bloggable item. Conversely, how often does it happen that there's a juicy item sitting there, waiting to be blogged, and the Kats are all either exhausted or playing possum. This post comes towards the end of an exhausting week for many members of the IPKat's blogging team and, while there are several of us who would have wanted to tackle it, the lot has fallen to the last man awake .... The item in question is Hotel Cipriani Srl & Others v Fred 250 Ltd & Others [2013] EWHC 70 (Ch), a Chancery Division, England and Wales, decision of the seemingly indefatigable Mr Justice Arnold this past Tuesday, 29 January. How splendidly flow the judgments from his prolific pen; how eloquent his rulings, and how seriously-- like another celebrated Arnold of current times -- does he dedicate himself to his official duties when he determines this issues that come before his court. Not for nothing is he called The Determinator [even though, unlike the other Arnold in The Terminator, he's allowed to deliver more than 18 lines ... ].

To refresh the memories of seasoned readers and provide some background for more recent ones, it may be worth taking a look at this Katpost on the earlier proceedings between the two parties, to which frequent reference is made. However, if you can't face retro-reading, continue here:

Hotel Cipriani held a Community trade mark for the word CIPRIANI and owned a number of hotels under that name in Europe. Giuseppe Cipriani was a director of Fred 250 Ltd (‘Fred’), this curious name being the new identity of the second defendant, formerly known as Cipriani (Grosvenor Street) Ltd. Fred had used the sign "Cipriani London" at its restaurant. In the earlier proceedings, Arnold J found that Giuseppe, together with Fred and the third defendant, Cipriani International, were liable for passing off, granting an injunction to prohibit infringement of the trade mark, passing off any restaurant business not connected with Hotel Cipriani by use of the name "Cipriani", as well as the use of the trade mark CIPRIANI or any other trade mark which was confusingly similar to CIPRIANI in relation to restaurant services.

Good news for lawyers! It's all in|the small print -- if you can read it

Fred dropped "Cipriani" from the name of its two London restaurants, calling them ‘C’ and ‘Downtown Mayfair’. However, as you can see from the logos for those two desirable diners, the C-word had not been entirely eliminated. Hotel Cipriani saw the logos too, and sought a declaration that the use of the words "by G. Cipriani" and "Managed by Giuseppe Cipriani", which were displayed in logos on the windows and menus of Fred’s London restaurants, constituted a breach of the injunction. Additionally Hotel Cipriani requested a declaration that the advertisement of restaurant services to United Kingdom consumers via Cipriani International's website was in breach of the injunction.

In support of its application for a declaration, Hotel Cipriani submitted that use of the signs to which it took objection gave rise to a likelihood of confusion. Giuseppe denied that this was the case: the "by Giuseppe" bits were not used for the purposes of distinguishing the services in question, since (i) he was well known as a restaurant proprietor and manager and (ii) the restaurants were clearly identified by names which would not be confused with either Hotel Cipriani or its services. Giuseppe added that, even if his use of the signs fell within the scope of an infringing use on account of there being a potential likelihood of confusion, it was not an infringement by virtue of Articles 12(a) or 12(b) of the Community Trade Mark Regulation, being respectively the use, in accordance with honest commercial practice, of his own name or the use of an indication “concerning the kind, quality, quantity, intended purpose, value, geographical origin, the time of production of the goods or of rendering of the service, or other characteristics of the goods or service”.

The Determinator came down firmly and almost entirely on the side of the wronged trade mark owner. In his view:

* Before discovering whether the injunction had been infringed, it was necessary to revert to the earlier decision in which it was granted -- a decision which had itself been upheld by the Court of Appeal (see Katpost here). The earlier proceedings weren't just important in legal terms: they were crucial in factual terms too, since the findings of the court in the earlier proceedings were res judicata. This being so, Fred and friends could not challenge them: their hands were tied by issue estoppel.

* Now, the findings which could not be challenged included the court’s conclusion that the average consumer was representative of the adult general public which patronised restaurants, particularly more expensive restaurants. Such a consumer would take the statement "by G. Cipriani" as indicating the person who was responsible for the restaurant, thus making a significant indication as to the origin of the services [= "essential function" of a trade mark in the EU, notes Merpel] provided at a restaurant which was so described. Giuseppe's that the use of the word “Cipriani” in that context did not fall within the scope of an infringement under Article 9(1)(b) of the Community Trade Mark Regulation could not be accepted.

* Despite his fame among law students in recent years, it had not been established that Giuseppe was well known to the relevant average consumer. Accordingly, consumers might well take the word "Cipriani" as forming part of the names of Fred's restaurants. Such use would therefore give rise to a likelihood of confusion for reasons similar to those given in the earlier proceedings.

* The average consumer would not understand the statement "by G. Cipriani" as denoting the quality or other characteristics of the services in question within Article 12(b) of the Regulation. The use of the signs amounted to unfair competition against Hotel Cipriani and was not in accordance with honest practices in industrial and commercial matters.

* The use of the statements connecting the defendants’ restaurants to the name “Cipriani” amounted to passing off and constituted the use of confusingly similar trade marks within the scope of section 56 of the Trade Marks Act 1994 [the "well-known marks" provision, for which there is no "own name" defence].

* The only issue which remained to be determined in relation to Cipriani International's website was whether it targeted United Kingdom consumers. The original version of the website, which had a ‘London’ page, did -- but the new website, which had no such page, did not. Accordingly, no declaration would be given in respect of the use of the statements in question on the new website.

This Kat has an uncomfortable feeling that, if this decision is correct -- which it appears to be -- then perhaps the law, if not wrong itself, is a little harsh. Is this level of protection, and the extent to which Giuseppe is distanced from being able to use his name in respect of his professional calling, more than we need the law to achieve, he wonders.

The Ciprianis: food, fun and fraud here
Right Said Fred here and, for connoisseurs of English humour, here

"On August 24, 2012, after a thirteen day trial and approximately three full days of deliberation, a jury in this patent case reached a verdict..."

A casual reader could mistake this sentence for the introduction to an interesting novel, but IP attorneys will certainly remember that these words spell another chapter of the Apple v Samsung saga, on which Merpel reported here. The jury, in the trial unfolding at the Northern District of California, found that certain Samsung devices infringed Apple's utility patent (US Patent No. 7,469,381 relating to "list scrolling and document translation, scaling and rotation on a touch-screen display", US Patent No. 7,844,915 relating to an "application for programming interfaces for scrolling operations" and US Patent No. 7,864,163 relating to a "method for displaying at least a portion of a structured electronic document") and design patents (US Patent Nos. D504,889, D593,087, D618,677 and D604,305), awarding $1.05 billion in damages. It also found that Apple had not infringed any of Samsung's patents. Both parties filed motions for judgment as a matter of law (and/or new trial) on several of the jury's findings, including the patents' validity and infringement, the willfulness of Samsung's infringing conduct and the award of damages enhancements. Two days ago, Judge Koh delivered four Orders (which can be found here and here) which address these motions.

The first Order dealt with Samsung's motion concerning the invalidity of Apple's design patents and one claim of utility patent '163 due to indefiniteness. "The purpose of this definiteness requirement", noted the court, is "to ensure that the claims delineate the scope of the invention using language that adequately notifies the public of the patentee’s right to exclude" (Datamize LLC v. Plumtree Software, Inc.). Indefiniteness as a ground for invalidity targets claims which are not "amenable to construction" or "insolubly ambiguous".

In relation to the utility patent, Judge Koh examined the notion of "substantially centered", found in claim 50. She made ample reference to previous case law, which accepts the use of "words of approximation, such as 'generally' and 'substantially', [as] descriptive terms commonly used in patent claims to avoid a strict numerical boundary to the specified parameter" (Anchor Wall Systems, Inc. v. Rockwood Retaining Walls, Inc.). Although she explained that "a court need not, and indeed may not, construe such terms to give them greater precision, absent a standard for imposing a more precise construction in the specification", she rejected the equivalence between lack of precision and lack of construability. Accordingly, the court held that the term "substantially centered" was not indefinite, as further demonstrated by the testimony of the parties' experts.

The examination of the four design patents moved from similar considerations, as "indefiniteness requires a determination whether those skilled in the art would understand what is claimed" (Young v. Lumenis, Inc.). The court observed that little precedent exists on the matter and argued that the evaluation of the indefiniteness of design patents is closely linked to the test for infringement. If the latter tries to establish whether "an ordinary observer, familiar with the prior art designs, would be deceived into believing that the accused product is the same as the patented design" (Crocs, Inc. v. Int'l Trade Com'n), it is necessary to verify whether such person could tell what is claimed by the design patent.

Assessing the arguments raised by Samsung, Judge Koh made several interesting point, which the IPKat summarizes below:

"[T]here is no per se rule that inconsistent use of dotted [and broken] lines [and shading] renders a patent invalid", as indefiniteness arises only if a claim is not amenable to construction. The court stated that claim construction implies construing the use of drafting techniques (Egyptian Goddess, Inc. v. Swisa, Inc.) and that, once issued, the patent enjoys a strong presumption of validity.

The fact that a patent depicts "a design in different orientations merely shows that the particular orientation – landscape or portrait, head-on or perspective – is not part of what is claimed". It does not allow one to infer that a feature invisible in one of the figures, due to the drawing's orientation or rotation, is not part of the design [Laws of Physics 1 - Samsung 0, whispers Merpel].

The existence of multiple embodiments of the same design patent does not imply its indefiniteness [the court does not rule out this possibility, but suggests that the claimant should provide strong proof of the irreconcilable differences of the embodiments, in order to overcome the patent's presumption of validity].

A design patent should be evaluated on the basis of the overall impression that it produces, which is the visual standard for comparison. Accordingly, if the relative position of an element in relation to the surface (below, on or on top) cannot be positively identified, no issue arises "as long as any of those could produce interchangeable visual effects that would appear substantially the same to the ordinary observer". If this is not the case, this situation merely shows that different embodiments of the same design patent are possible.

The court underlined the importance of distinguishing between drafting inconsistencies and actual ambiguity, as the first may be overcome when it is possible to construe the drafting techniques. It found that "all of Samsung’s alleged sources of indefiniteness concern how the design is represented, rather than the nature of the design itself" and that "[t]hese ambiguities are not fatal to patents that this Court must view with a strong presumption of validity". Thus, it rejected Samsung's claims, confirming the validity of Apple's design patents.W as (un-)willful: the Court finds that Samsung's infringement was not willful

Judgment as a matter of law? Not for us!

In its second Order, the court examined Samsung's motions for a new trial and for judgment as a matter of law on a series of issues, which included Samsung's willfulness in relation to the acts of patent infringement, under Federal Rule of Civil Procedure 50 and 59. A district court may grant judgment as a matter of law, Judge Koh said, "when the evidence permits only one reasonable conclusion and the conclusion is contrary to that reached by the jury" (Ostad v. Oregon Health Scis. Univ.): the party, therefore, must show that the verdict is not supported by "substantial evidence". If the verdict is contrary to the clear weight of evidence, instead, a court may grant a new trial, if necessary to prevent a miscarriage of justice.

This brave Kat ventured through the 40-page long judgment, to catch a glimpse of all the six claims analyzed in the Order. The following is a recap of what caught his attention:

(a) Validity and infringement of Apple's design patents
Judge Koh rejected Samsung's claims that no reasonable jury could have found Apple's design patents valid and infringed. She held that the jury had been properly instructed on the elements to be assessed and the standards to be applied. Concerning the evaluation of functional elements, the court clarified that it was neither necessary nor beneficial to provide an element-by-element construction to the jury:

"[t]he cases do not suggest that this type of claim construction is appropriate when instructing a jury", as it "could divert the jury's attention from the design as a whole".

Further, it concluded that Samsung had failed to provide evidence that the overall design portrayed by the patents was primarily functional. The scrutiny of obviousness, conducted to evaluate "whether the claimed design would have been obvious to a designer of ordinary skill who designs articles of the type involved", through a two-step process (Titan Tire Corp. v. Case New Holland, Inc.), did not support Samsung's assertions.

(b) Protectability and dilution of Apple’s Registered iPhone Trade Dress and Unregistered iPhone 3G Trade Dress
The court reviewed Samsung's arguments concerning functionality and applied the Disc Golf Ass’n, Inc. v. Champion Discs, Inc. test. It also evaluated secondary meaning ("the purchasing public associates the trade dress with a particular source") and fame, which allow the party, if other elements coexist (use in commerce, after the trade dress became famous, and likelihood of blurring - see Jade Toys, Inc. v. Mattel, Inc., 518 F.3d) to show dilution ("the whittling away of the value of a trademark when it’s used to identify different products", Mattel, Inc. v. MCA Records, Inc.). Samsung's motions were again denied, as the jury's findings were not against the clear weight of evidence.

(c) Validity and infringement of Apple's utility patents
Samsung's claims contesting the jury's findings were rejected. Judge Koh conceded that, in relation to one of the patents, the jury's verdict contained inconsistencies, but refused to grant a new trial, noting that courts should set aside a verdict only when absolutely necessary. The question, in fact, "is whether the verdict can be reconciled on any reasonable theory consistent with the evidence" (Ward v. City of San Jose): the court clarified that "[o]nly verdicts that entail two legal conclusions that cannot logically coexist, such as an award of damages and a finding of no liability, rather than a mere inconsistent view of facts, warrant the Court’s intervention".

(d) Willfulness
This is perhaps the most interesting point of Judge Koh's Order. The court recalled that the evaluation of willfulness, in relation to patent infringement, requires a two-prong analysis: "[t]he objective inquiry is a question for the Court, and the subjective inquiry is a question for the jury" (Bard Peripheral Vascular, Inc. v. W.L. Gore & Associates, Inc.). Since the jury had found that Samsung’s infringement was subjectively willful for five of the seven patents, Judge Koh moved to analyze whether there Samsung had an objectively reasonable defense to infringement of Apple's patents. Her findings supported Samsung's motion for judgment as a matter of law. Thus, she declared that Samsung's infringement of the utility (for reliance on invalidity defenses on various grounds) and design (relying on reasonable non-infringement defenses) patents was not willful.

(e) The liability of Samsung Electronics Corporation (SEC)

Samsung argued that SEC, the Korean parent company, had not committed patent infringement in the United States, as it had merely sold the accused devices to the US subsidiaries Samsung Telecommunications America (STA) and Samsung Electronics America (SEA). Rejecting the argument, the court found that "SEC ships the phones directly into the United States, albeit having first transferred title to STA and SEA", an arrangement which could determine liability in light of Litecubes, LLC v. N. Light Prods. Evidence that SEC exerted a high degree of control over SEA and STA activities in the US further supported the court's conclusion.

(f) Samsung's affirmative cases
Judge Koh examined and denied Samsung's motions related to the infringement of some of its patents by Apple's devices. The most interesting question involved the jury's findings of exhaustion and non-infringement, in relation to Samsung's patent '516. The court observed that "[w]ithout infringement or evidence of infringing use, there can be no exhaustion": accordingly, it declared Samsung's patent non exhausted (but still not infringed, in light of the jury's finding).

(g) The trial was not manifestly unfair
The court found that "the trial was fairly conducted, with uniform time limits and rules of evidence applied to both sides". A new trial, then, would be contrary to the interests of justice.

The other two Orders: damages enhancements and Apple's motion for judgment as a matter of law

With its third Order, Judge Koh denied Apple's motion for damages enhancements under the Patent Act, 35 U.S.C. § 284, and the Lanham Act, 15 US.C. § 1117(a). As § 284 requires a finding of willful infringement, its applicability was ruled out. Judge Koh, instead, addressed the relationship of § 1117(a), which aims at compensating the party for additional losses not included in the jury's award, with § 289 of the Patent Act, finding that the latter provision (a party “shall not twice recover the profit made from the infringement") did not preclude the applicability of the former.

The court noted that "all six products that the jury found to dilute trade dress were also found to infringe design patents" but the jury correctly "returned a single damages number that also incorporates design patent infringement damages". It also held that Apple had not given proof of any additional damages which warranted the application of the Lanham Act enhancements, which "are designed to compensate plaintiffs for losses, not to disgorge ill-gotten gains". Accordingly, it rejected Apple's motion.

Finally, Judge Koh considered Apple's motion for judgment as a matter of law on some of the jury’s findings and on other issues that the jury did not reach. The motion was granted only in relation to the invalidity of claims 10 and 15 of Samsung's US Patent No. 7,675,941, as Apple presented clear and convincing elements to establish anticipation. Apple also argued that Samsung breached the European Telecommunications Standards Institute’s (“ETSI’s”) Intellectual Property Rights (“IPR”) Policy, a claim rejected by the jury. The court refused to overturn the jury's verdict on the issue, noting that Apple had not provided sufficient evidence of a causal link between the alleged breach and harm.

Wednesday, 30 January 2013

For many years, out of the kindness of his heart and despite having many better things to do, the IPKat has been telling the UK's Intellectual Property Office and its political masters what to do. Sometimes his advice has been ignored, mislaid or kicked into the long grass; his stern instructions have been met with that happy blend of incomprehension and indifference which civil servants are sent on courses to acquire. But occasionally -- just occasionally -- the Men from the Ministry and (this being the 21st century and an era of equality) the Women too will respond to the provocations of the IPKat and (this being the 21st century and an era of equality) Merpel.

The UK IPO: the motif on the left symbolisesthe main product of Wales, where the IPOis based -- rain drops

Only yesterday, in his review of a briefing on the L2Pro 3G mobile-enabled platform for delivering up-to-date IP advice for SME folk (see post here), this Kat posted the illustration of the IPO's current logo, with all those blue blobs on it, together with an unflattering comment with regard to their symbolism. Little did he know that, on reading this post, the great and the good from Newport, Gwent, and their colleagues in London, had set to work in designing a new logo. The fruits of their labour may be seen in the material posted below, culled from the IPO's website, here:

IPO logo change and single government identity

We will shortly begin replacing our existing logo with the Royal Coat of Arms. This is part of a wider move to develop a consistent and cost-effective approach to branding across UK government departments and agencies.

We will implement the logo change in a phased approach commencing in February 2013, starting with our web site and gradually replacing stationery as and when stock levels need replacing. During this period you may notice some inconsistency with our stationery as paper and material stocks are replaced.

Government's use of a standard logo will also make it easier for its customers to distinguish genuine government correspondence from official-looking and often misleading approaches by other organisations.

For those who want to take a closer look, the artwork of the logo is reproduced in greater size here. The lion, depicted on the left of the emblem, is an animal that sleeps for two or three days at a time after it kills and eats its prey, this period of time representing the approximate number of man (or woman) hours needed to examine a patent application. The unicorn, a fictional beast whose function is principally decorative and ceremonial, represents whoever's turn it is to be the Minister for Intellectual Property ...

Ever-vigilant for news scoops, the IPKat spotted the following post on the website of London barristers' chambers 39 Essex Street (with comments and hyperlinks added by the Kats):

"On 21st Jan 2013 James Ramsden represented the Intellectual Property Regulation Board (“IPReg”) before the Joint Disciplinary Panel of the Patent Regulation Board and the Trade Mark Regulation Board in the case of:

The Intellectual Property Regulation Board v David John Rickard

This was the first disciplinary case brought under the new regulatory regime for Patent Attorneys and Registered Trade Mark Attorneys under the regulatory objectives set out in S.1 Legal Services Act 2007.

The proceedings have resulted in new and important guidance to the profession to be published by IPReg within the next few days concerning the circumstances in which Attorneys can issue terms of business which give them rights over their client’s property, including intellectual property, to secure payment of fees [this sounds like an attempt to create an entitlement to a lien over intellectual property -- though it may be more like a contractual requirement that the client assign his rights to the attorney. Further information would be handy ...].

The decision and guidance to be issued by IPReg has implications for many other professionals who are also required in practice to avoid professional and personal conflicts of interest and conduct likely to undermine public confidence in the profession".

At the time of posting of this item, there was no information concerning this case on the IPReg website and a site search for 'Rickard' scored zero hits.

This Kat is of course curious to know what the facts are -- and to discover why this ruling requires the imposition of "new and important guidance to the profession within the next few days". Is IPReg v Rickard an attempt to nail a single instance of an objectionable practice before it catches on with everyone else, or is it a test case in which a defendant could have been picked out of a hat? Is this guidance a matter which is so obvious that no consultation is needed between IPReg and the professions it regulates, or is consultation an irrelevance? It would be good to know.

On a separate note, this Kat wonders whether the entitlement of professional IP advisers to obtain rights in their clients' IP in security for fees is something which is (i) encouraged, (ii) tolerated, (iii) discouraged or (iv) forbidden in other countries. Readers: do let us know!

Who needs a lien if youcan send in the heavies?

Merpel is more concerned with the fact that information concerning this matter, which manifestly concerns the UK patent and trade mark attorneys -- and by implication their professional standing in comparison with their European colleagues and competitors -- should appear first on the website of the barrister involved. Does IPReg not have sufficient staff and control over its website to be able to post at least a short announcement to be able to warn those whom it regulates that they should expect imminent guidance on one or more important issues?

Tuesday, 29 January 2013

Another night could not be allowed to pass without this weblog recording a decision which crept up on this Kat without warning and which he feels a bit guilty about not having recorded earlier. The case in question is SAS Institute Inc v World Programming Ltd[2013] EWHC 69 (Ch), decided last Friday by Mr Justice Arnold, on the return of that case from its "holiday" in Luxembourg.

To remind readers of the facts, the following brief summary may be useful. SAS developed its own SAS analytical software system, this being an integrated set of programs that let users perform a wide range of data-processing and other tasks -- especially statistical analysis. The SAS software had been in use for some 35 years, generating income of more than £2 billion. At its heart was "Base SAS", which let users write and run application programs ("scripts"), written in SAS language, in order to manipulate their data.

Base SAS's functionality could be extended by using additional components -- in this case SAS/ACCESS, SAS/GRAPH and SAS/STA. Over the years, SAS's customers had created thousands of apps in the SAS Language. Some of these apps were short and simple, while others were vast. Anyone wanting to run their existing apps or create new ones had to take a licence to the SAS components. Other suppliers of analytical software existed in the market, but anyone wanting to change to another software would have to rewrite all its apps in another language, which would be a pain (and an expensive one, too).

World Programming, having recognised the huge potential market for software to execute SAS-based apps for use elsewhere, developed its own World Programming System (WPS) -- which inevitably emulated much of the functionality of SAS's components in order to ensure that they worked the same. It was not alleged that World Programming had access to SAS's source code or copied it, or even that it copied any of the structural design of the components' source code. World Programming also created a WPS manual, which described the functionality of various elements briefly by reference to syntax diagrams, plus a set of WPS guides --four quick reference guides which simply listed elements of the SAS language and indicated whether the current edition of WPS supported it.

In September 2009 SAS commenced proceedings, alleging copyright infringement in its software and in its own manuals, as well as breach of SAS's licence terms with regard to the Learning Edition of the SAS System. In July 2010 Arnold J, hearing the case, referred a series of questions to the Court of Justice of the European Union for a preliminary ruling. After the Advocate General gave his Opinion and the CJEU pronounced its ruling, back came the case for Arnold J to finish off.

Mr Justice Arnold offered SAS only a small crumb of comfort, rejecting all its copyright infringement claims except for that relating to the copying of the SAS manual in WPS Manual -- which he had already established to be the case back in 2010.

* First, he declared that the CJEU's answer to the first five questions amounted to an endorsement of Pumfrey J's interpretation of Article 1(2) of the Software Directive ("Protection in accordance with this Directive shall apply to the expression in any form of a computer program. Ideas and principles which underlie any element of a computer program, including those which underlie its interfaces, are not protected
by copyright under this Directive") in Navitaire Inc v easyJet Airline Co Ltd. Basically this means that copyright in a computer program protects neither the programming language in which it is written nor its interfaces and functionality. This in turn means that World Programming had not infringed copyright in the SAS components by producing WPS.

* He then rejected the argument that the SAS language was in itself a work that was its author's own intellectual creation and thus protectable under the Information Society Directive. Based on the evidence which was adduced at trial, and a general understanding of the position, the court's provisional view was that a programming language such as the SAS Language was not capable of being a work [Told you so, says the IPKat to a number of people who have been arguing with him on this point].

* In any event SAS could not assert that the SAS language was a copyright work in its own right without an amendment to its particulars of claim -- and no such amendment should be permitted at such a late stage of the proceedings. To allow it would be to raise new factual and legal issues for investigation.

* The position of SAS's data file formats was no different to that of of the SAS language.

* It could not be said that World Programming had reproduced the expression of the intellectual creation of the author of the SAS manuals, whether by producing or testing WPS.

* Further, the use by World Programming of the SAS Learning Edition fell within Article 5(3) of the Software Directive ("The person having a right to use a copy of a computer
program shall be entitled, without the authorisation of the right­
holder, to observe, study or test the functioning of the program
in order to determine the ideas and principles which underlie
any element of the program if he does so while performing any
of the acts of loading, displaying, running, transmitting or
storing the program which he is entitled to do"), and none of World Programming's actions was a breach of the licence contract or an infringement of copyright.

This weary Kat hopes he has got the case right. He knows that he will hear from lots of readers if he hasn't.

"Helping UK Small and Medium-Sized Enterprises succeed in a global marketplace" was the title of a breakfast briefing which provided this Kat with his first cup of coffee of the day: the venue, the InterContinental Hotel [hmm, too close to InContinental to be a truly successful brand, mewses Merpel], St James Park, Central London. Those of us who were invited were all, or almost all, on our best behaviour, as is usually the case in any event where the foyer staff and cloakroom attendants sound as though they've been educated at Eton and Oxford. The flavour of everything but the coffee (which was dreadful) was mainly German, though, with bits of American and British thrown in for good measure.

The UK IPO: the motif on the left symbolisesthe main product of Wales, where the IPOis based -- rain drops

Ceri Witchard (Deputy Director of Innovation, UK IPO) was the first substantive speaker. "There are lots of SMEs out there who are doing well and we want to provide them with the tools to succeed", she opened -- at which this Kat feared that Ceri shared a speech-writer with whoever has scripted speeches for the past few Ministers for Intellectual Property. Thereafter, things got considerably better. SMEs receive too much information and can't make sense of it, Ceri continued, outlining the two key elements in her work: (i) how to educate SMEs as to what IP can and can't do, and (ii) how to provide a business advisory side, this being as much at the level of asking "have you thought of ...?" questions rather than just giving answers, as well as putting SMEs in touch with the many business support schemes which already exist and which have already been trained by the IPO.

Next up was Dr Helmut Appel ( Fraunhofer -- an admirable innovation promotion organisation which was first mentioned on this weblog as long ago as September 2005 and which could well serve as a model for other countries to copy). Dr Appel spoke about the function of his organisation and outlined the "L2Pro SME Training Platform", a four-way initiative to create a 3G mobile-enabled facility for SMEs to learn about intellectual property on an interactive need-to-know basis while they were doing exciting things like, er, getting on with their real work and not attending endless IP briefings. The L2Pro project, which the IPO hopes will soon bring benefits to the United Kingdom too, is also supported by Qualcomm and Inno Actions IP4Inno(now transferred to EACI) [the Kat thinks EACI is the Executive Agency for Competitive and Innovation, but he's prepared to be corrected; there were a lot of acronyms in the air, it was very early in the morning and the coffee was disappointing ...].

The final formal speaker, Derek Aberle (Executive Vice President of Qualcomm), provided a potted history of Qualcomm and how important its IP was to it when it was still a tiddler. Qualcomm's expertise has gone into the L2Pro SME training platform. We all nodded sagely, of course, the audience being made up primarily of IP believers of one sort of another.

What this Kat liked best was the Q&A session, at which the speakers were, inter alia, grilled as to their lack of familiarity with criminal sanctions for patent infringement and firmly reproached for having said nothing about second-tier protection for innovations (one of this Kat's favourite hobby-horses right now (click here if further proof is required). Someone managed to ask a question about the user interface for L2Pro and whether it was as able to assist SME users who were faced with other people's IP rights rather than trying to assert or develop their own ("yes", was Dr Appel's reassuring answer) but, for the most part, the questions went a good deal wider than the organisers of the briefing might reasonably have expected. Must have been the coffee ...

You have to hand it to American athletic stars (or to their business consultants). Nowhere else do successful athletes seek to monetize their sports prowess as quickly and with the audacity of American athletes. Even before they have taken their first post-match shower, efforts are afoot to find ways of commercially leveraging the athletic accomplishments associated with their name and image, sometimes in idiosyncratic, if not bizarre, fashion. Lest anyone challenge this sports-mad Kat on this point, consider the meteoric rise of Colin Kaepernick here and "Kaepernicking".

For those readers not well-versed with American professional football (the National Football League), the most important position on a football team is the quarterback, who is ultimately responsible for getting his team to cross the opponent's goal line and to score a touchdown. Successful quarterbacks are treated as rock stars (indeed quarterback, Tom Brady, here, from the New England team, is married to Brazilian supermodel Gisele Bündchen, here).

Until November 2012, the starting quarterback for the San Francisco Forty-Niners was Alex Smith. While not as highly-regarded as highly as someone like Tom Brady, Alex Smith is considered a far better than average quarterback. Unfortunately, Smith suffered concussion in a game in early November 2012 and his coach was forced to use the virtually untested back-up quarterback, Colin Kaepernick. Usually such a move is unsuccessful but, with respect to Kaepernick, all that can be said is—au contraire! He demonstrated extraordinary skills, such that his coach continued to use him even after Smith was deemed fit to play. How successful has Kaepernick been? So much so that his team will be competing this Sunday in the hyperbolically-named Super Bowl, here, which will determine who is the champion of American football.

But it is not only Kaepernick's athletic success that has captured the fancy of football fans. It turns out that every time he makes a touchdown, he celebrates by flexing and then planting a robust kiss on his substantial bicep, which is itself richly adorned with multiple tattoos. Kaepernick's ritual has become as famous as his athletic success and has led to the term "Kaepernicking". All of this has taken place only since November 2012.

Enter the world of trade marks and branding. As reported, here and here, on January 14, 2013, Kaepernick filed an application in the U.S. Patent and Trademark Office here for the word mark "Kaepernicking" in class 25 for shirts. (Presumably the design of the shirts will be unconnected with the size of Kaepernick's biceps, which would make them a poor fit for most of humanity.) The application recites a date of first use of December 31, 2012, although this Kat could not find a sample of the "Kaepernicking"-brand shirt. If any American readers, especially in the Bay area, can put their paws on such on a "Kaepernicking" brand shirt, this Kat would be delighted to see it.

As a sports fan, this Kat wishes Kaepernick and his football team all the best in the Super Bowl match to take place this Sunday. As an IP lawyer, this Kat will be curious to see how "Kaepernicking" fares as a trade mark. As Kaepernick will likely find out, in the world of sports stars and product branding, athletic and commercial success go tightly hand in hand.

Monday, 28 January 2013

"The Strange World of IP Consents", launched on Friday afternoon as the fourth item down in the IPKat's Friday Fantasies feature, already has over 50 people registered. In case you missed the earlier notice,

" ... on Tuesday 19 February, 5pm to 7pm (inclusive of registration and refreshments: it's really 5.15pm to 6.30pm) in the lovely premises of Olswang LLP's London office at 90 High Holborn, IPKat blogger, practitioner, scholar and IP transaction guru Neil J. Wilkof will be sharing a double bill with heavy-hitting katfriend, IP Draughts blogger, scholar and IP transaction guru Mark Anderson in which they will be discussing exciting topics like trade mark consents and coexistence, and the difference between licences and covenants not to sue. IPKat blogmeister Jeremy will be in the chair, CPD points will be available and admission is, in true IPKat tradition, free. To register, email here with the subject line "IP Consents", giving your name and affiliation (if any). There are no other formalities. See you there?"

**************************************

BILETA, the British and Irish Law Education and Technology Association, is calling for papers for its 2013 conference, which will be held from 10 to 12 April in the Liverpool Law School, University of Liverpool. According to the IPKat's best information, the deadline for the Second Call for Submissions of abstracts and panel proposals is now extended to 25 February 2013. Submission of an abstract for presentation, works in progress or concept paper (not exceeding 700 words), which includes Title, Theoretical/Empirical framework and argument via the EasyChair Conference Management System at the earliest possible opportunity. for further details, inspiration and indeed anything else, contact katfriendJoseph Savirimuthu who will be pleased to hear from you.

Malta and IP is another forthcoming event -- being held on 7 February in London. It's a breakfast briefing at the Malta High Commission, at which event the topic of Malta as an Intellectual Property jurisdiction of choice is on the menu. The event speakers are lawyers from PWC (Malta) and Fenech & Fenech Advocates. Attendance, on a first-come-first-served basis, is free of charge and, comfortingly for those who make it their habit to attend breakfast briefings, will include breakfast. The event opens at 8.30am (registration starts at 8 am) at Malta House, 36-38 Piccadilly, London W1J 0LE. To attend, email events.london@gov.mtby 6 February 2013.

Brüstle in the BGH. The full decision from the German Supreme Court Bundesgerichtshof, BGH) in the Brüstle patent matter (patentability of inventions relating to human embryonic stem cells) has now been posted on the BGH website, following its decision of 27 November 2012. The BGH had to issue a final decision in the matter following the Court of Justice of the European Union (CJEU) ruling in Case C-34/10Oliver Brüstle v Greenpeace ( noted here and here by the IPKat) on the questions it referred to the CJEU.
The reasons can be found here, in German. A big katpat to Nick Bassil (Kilburn & Strode LLP) for letting the Kats know.

Lolcat -- and a reminder. A katpat goes to our good friend Estelle Derclaye for this link to news of an exhibition of lolcat art which is currently gracing the catwalks of London. The display, Lolcat -- Teh Exhibishun, ends on Friday 13 February.
The IPKat and Merpel should like to draw the attention of (i) new readers and (ii) old readers who should know better that their interest is in images of cats as they relate to intellectual property -- for example where a cat-based image is a parody of another's work -- and in the strategic use of cat images in order to enhance the text of materials posted on this weblog, but not in cats and news of cats as such. In short, this is a weblog about intellectual property law which is written by cats, not a weblog about cats that is written by intellectual property lawyers. So, please, no more emails about cats stuck in trees, cats on fences, cats becoming mayors of various parishes, cats rolling around and (this is by far the largest class of unsolicited art) readers' cats fast asleep. They're all very cute but we really can't use them all. Thanks!

Around the weblogs. It's second time round to Madagascar for Afo-IP's Kingsley Egbuonu on his tour of African official IP websites -- and all is well, he says. Closer to Europe, Fidel Porcuna makes his debut post for the MARQUES Class 46 weblog with a tale of money laundering and allusions to unspeakable torture -- something to do with a Body Shop franchise, it seems. There are three more books for prospective reviewers, offered on the jiplp weblog here. Finally, IP Finance has something for anyone who wonders about IP and the taxation of Dutch sandwiches ...

The word "cool" was certainly in vogue last year, after a British judge used the word in court. This use was picked up by the media, which were apparently astonished to learn that judges speak the same language that they do [rather better, in fact, since they don't blather on about "patenting a trade mark", notes Merpel]. Anyway Sean Gilday, trainee patent attorney at Bristol-based Page Hargrave and occasional contributor to the blogosphere, offers an interesting reflection on the penetration of the word "cool" into the very heart of Continental Europe. Writes Sean:

"As January winds down, and the excesses of Christmas fade along with the painful memories of post-New Year detoxification, this may be is a good time to look back with a cool head at the year just passed.

A lot of cool stuff happened in 2012, but just who was it who introduced the concept of “cool” to the European courts? Okay, I’ll admit that this is rather like one of those questions on QI that are designed to catch people out. I can be sure that quite a few IP practitioners and scholars reading this blog just set off the buzzer by saying "His Honour Judge Birss QC". Well, I can tell you that’s not correct, so deduct an appropriate number of points from your score.

Registered by Dr Oetker

Ironically, I only learned about the truth of the matter from the judge himself. In December last year, after a CIPA induction day, I walked down to the Queen Mary campus at Smithfields to attend the QMIPRI Herchel Smith Lecture 2012 with its keynote speech by Judge Birss on the topic of “Bringing Cool Back”. It was in his opening statements that he confessed that, while it is a common misconception that he was the first to use the criterion of coolness as a grounds of differentiation in the well known Apple v Samsung judgment of 9 July 2012 (noted by the IPKat here), it simply isn’t true.

Favoured by Aldi

Judge Birss recalled a case before the Düsseldorf Landgericht (Regional Court) that had been brought to his attention by a German colleague. The case was an infringement action brought by German food manufacturer Dr Oetker against supermarket chain Aldi. Both parties produced a dairy-based pudding sold in a packaging showing an accompanying cow mascot: Dr Oetker had marketed its pudding with the cow “Paula” since 2006, and in the autumn of 2011 Aldi began to market its pudding with a cow called “Flecki”. Dr Oetker claimed that “Flecki” infringed the 2005 registered Community design for “Paula”.

In making their decision in the first round of judgments on 1 March 2012 (the case has since been appealed), the court took into account the various differences between the two cows: one had stripes, the other had spots, etc. Standard analysis, until you come to the final paragraph of the judgement:

For non-Deutschsprechende [that's the German for "German-speaking", says Merpel] readers, the analysis compares the two cows more in terms of their individuality. The cow Flecki is a skinny cow with a cow-bell, who stands shyly on one side of the box. Paula on the other hand is stylised, stands in the centre of the box and has “suggestive sunglasses” which, crucially, give Paula “coolness”.

Naturally, Judge Birss confessed, he was unaware of this relatively esoteric case when rendering his judgment in Apple v Samsung, and it’s likely an instance of multiple discovery. However, the credit of being “the first” must, in this case, go to the Düsseldorf Landgericht. How cool!"

IPKat team member Jeremy observes that the use of the word "cool" in its modern context of "calm", "composed", "unruffled" or "sophisticated" has quite a pedigree. Charles Dickens uses the word in this context several times in the Pickwick Papers(1836-7)and Wilkie Collins employs it in The Moonstone(1868). He assumes that it would have been in common parlance before then, maybe by a long way. Does this weblog have a corps of erudite readers who might be able to trace "cool" to its source?

The author of the EU Commission's webpage
on the Unitary Patent realises his
entirely inadvertent omission

For the Unitary Patent to come into force we all know by now that 13 states, including the UK, France and Germany, need to ratify the Unified Patent Court (UPC) Agreement. Well, although this is what the Commission's webpage says (as does the EPO's page on the subject), these conditions are necessary but not sufficient - which is a logician's shorthand for saying that whoever wrote the Commission's press release was being economical with the truth.

Apart from those ratification requirements, the Unitary Patent cannot become a reality until the current regulation on jurisdiction and enforcement of judgments across the EU, a.k.a. the Brussels I Regulation, is also amended -- and this might not be trivial, especially since not all 27 member states are on board.

This point was highlighted and brought to the IPKat's attention in a comment left by Gibus -- one of our frequent and valued commenters -- on a post on the Dutch Battle of the Tablets. Gibus explains the issue further:

Since Brussels I regulation (EC 44/2001) is referred to in this
judgement, I jump on this to raise two issues which seem to not have
been considered by any Kat interested by the Unitary Patent here.

First,
it has been rightly recalled by some Kats here and by others elsewhere
that the unitary patent regulation could only enter into forced once the
Unified Patent Court (UPC) international agreement has been ratified by
France, Germany and the United-Kingdom (raising sometimes some concerns
with regard to the referendum about UK leaving EU as proposed recently
by Cameron [Merpel interjects that apparently this might not be greeted with universal disappointment, were the UK to go its own way] and 10 other Member States. But what has not been pointed
out is that, according to Article 89 UPC, the UPC cannot entered into
force before Brussels I regulation has been amended with specific
provisions with regard to UPC jurisdiction.

Too bad, a recast of
Brussels I regulation has just been voted by the EU Parliament and the
Council (EU 1215/2012, published on EUOJ of December 20th, 2012, L
351/1). But nothing about UPC was taken on board in this recast.
Therefore the Commission has to make another proposal which has to go
through the EU legislative procedure. That is: the UPC agreement, nor
the unitary patent regulation cannot enter into force before another
amendment of Brussels I is voted by the European Parliament and the
Council. Who has said that first unitary patents should be granted in
early 2014?

But the second point is that the Commission could be
quite reluctant to propose such an amendment of Brussels I regulation.
Because it would prove without any doubt that the UPC is affecting, and
even is altering, the scope of common EU rules. According to Art. 3.2 TFEU, in such a case, the Union would have exclusive competence for the
conclusion of an international agreement. This has been recently
confirmed by the CJEU (Case C‑370/12 of November 27th, 2012, about the
Treaty establishing the European stability mechanism (ESM) that it
follows from Art. 3.2 TFEU that “Member States are prohibited from
concluding an agreement between themselves which might affect common
rules or alter their scope.” Therefore, Art. 3.2 TFEU shall apply to
the UPC international agreement, and the EU shall have exclusive
competence to conclude UPC. There is no way to consider that the unitary
patent regulation could amount to an explicit authorisation from to EU
to waive its exclusive competence. Therefore, Member States are not
authorised to conclude the UPC between themselves.

Any thoughts on this?

For a more in-depth analysis of why the UPC Agreement was deemed to require the amendment of Brussels I, see the post here by Axel H. Horns on the KSNH Law Blog. Thanks to Gibus for his comment (and indeed thanks to all those who take time to comment on the IPKat's posts).

Sunday, 27 January 2013

As a fan of the IPKat since law school some ten years ago, this guest Kat is honoured for the opportunity to offer up some mewsings of his own. As a North American purebred (with some distinctive Quebec markings), this Kat's morsels will focus primarily on the fun and foibles of the United States IP system -- starting with a colossal copy-fight brewing over the future of television. The magic antennaThose who haven't been cat-napping in recent years will have discerned that TV shows are spreading to more and more places. While TV was once no more than a flickering beast that squatted in the living room, it now appears all around us -- on mobiles, on lap-top computers, on tablets and so on.Seeking to spread around this visual buffet (too bad so much of it is junk food, sniffs Merpel), an American company called Aereo has set about to deliver real-time live television to all of these devices -- for one dollar a day. The service, which is for sale in New York, allows subscribers to pluck TV signals from the air and beam them directly to the device of their choosing wherever they happen to be.Big broadcasters, needless to say, don't like this one bit and are suing to drive Aereo out of town. The broadcasters, who have recently succeeded in extracting fees from cable companies who deliver their channels, say Aereo is violating their exclusive right to deliver a public performance under the Copyright Act. Nonsense, says Aereo, and points to its novel antenna system to say the TV beaming is not a public performance at all.

Aereo's "dime sized" antenna

So what trick does Aereo have up its sleeve? In short, what Aereo has done is to rig up a facility with thousands and thousands of wee antennae -- each of them dedicated to a single subscriber who, in Aereo's eyes, are receiving their own private transmission. This may be so in theory but what, asks the IPKat, do the judges have to say?New York says yes, California says noLooking to the definition section of the US Copyright Act, we find a passage that will define Aereo's fate:

To display a work publicly means(2) to transmit or otherwise communicate a performance or display of the work to a place specified by clause (1) or to the public, by means of any device or process, whether the members of the public capable of receiving the performance or display receive it in the same place or in separate places and at the same time or at different times.

Plain as day? Alas, no. Courts on America's east and west coast have lately come to very different understandings of what a "public performance" really means.In Aereo's home town of New York, you see, the influential Second Circuit Court of Appeals offered a key pronouncement on "public performance" in 2008's Cartoon Network LP v. CSC Holdings(known as the Cablevision case). That case involved a new technology that lets TV viewers record shows on DVR devices located miles away on remote storage units. Even though the IPKat and his feline friends may all record the same episode of the Mickey Mouse Club, the fact they use discrete units to do so means the performance is private -- much as if they had used a VCR in their living room.

If only the humans wouldput on better shows..

Crucially, the Second Circuit rejected the idea that the "performance" in question was the underlying work or the original transmission. Instead, the appeals court said courts should look "downstream rather than upstream or laterally, to determine whether any link in a chain of transmissions made by a party constitutes a public performance." The judges in Cablevision also distinguished the remote DVR unit from other situations where courts had found infringement based on a "master copy" -- for instance, a hotel and video booth store that played the same tape to different customers.
But what about Aereo and its TV-everywhere service? Is the company not also streaming a master copy? Not at all, said a New York federal court in refusing to grant a preliminary injunction this summer, agreeing that Aereo's one-antenna per customer meant these are private performances. The court also rejected the broadcasters' call to distinguish the Aereo services from Cablevision because, unlike the DVR case, Aereo was streaming a live service. According to District Judge Alison Nathan, the Cablevision ruling did not spell out any time-shifting requirement for a performance to be private -- it was the individual transmission that mattered: Aereo has made substantial investments of money and human capital in its system, all in the reliance on the assumption that the Second Circuit meant what it said in Cablevision, rather than what it did not say."
The IPKat notes that, though the ruling comes preliminary injunction stage, Judge Nathan's words sound like a green light for Aereo to push forward with its TV plans. Apparently the company agrees: in mid-January the company announced it will soon switch on the service soon in 22 more cities.But not so fast. On the heels of Aereo's victory in New York, a would-be competitor not-so-creatively named "AereoKiller" launched a rival service in California -- and was greeted by a similar lawsuit. This time, the broadcasters found a similar audience and, in late December, a California court ordered the would-be Aereo to shut down. And what of the marvel of the mini-antennas? The court was not impressed and rejected the idea that the law simply protected transmissions rather the shows in question:

That is not the only possible reading of the statute. The definition section sets forth what
constitutes a public performance of a copyrighted work, and says that transmitting a performance
to the public is a public performance. It does not require a "performance" of a performance. [...]

People are interested in watching the performance of the work. And it is the public performance of the copyrighted work with which
the Copyright Act, by its express language, is concerned. Thus, Cablevision 's focus on the
uniqueness of the individual copy from which a transmission is made is not commanded by the
statute.

In a footnote, the court also invoked the great Judge Richard Posner to claim him as an ally who "has criticized the purely formalistic textual analytic approach to copyright cases involving alleged infringement of the performance right." (PDF of injunction ruling here)

TV, TV everywhere -- and barely time to thinkThe IPKat's head is by now spinning with all this talk of mini antennas (are these individual antennae technologically necessary - or just a clever dodge, wonders Merpel) and a "performance of a performance." For now, it appears Americans outside of California will soon be inundated with more television on more devices. And if the country's appeals courts split on the antenna question, the Aereo issue could eventually be ripe for the Supreme Court.

Saturday, 26 January 2013

Road Humps and Sidewalks: the path less travelled, by Dr Kalyan C Kanakanala, is an intriguing piece of fiction from the pen of an Indian IP professional who "aspires to walk the path never taken" [Does that aspiration have any relevance to the choice of "road humps and sidewalks", muses Merpel]. Here's a review by Katfriend Caroline Ncube:

This 164 page IP law thriller has all the hallmarks of a winner; corporate espionage, attempted kidnapping, foiled hits, court room romance, a corrupt Chief Justice and a David v Goliath (Pharma v generic company and public hospitals) battle over patents for a life-saving drug. It's an engrossing read which I read in one sitting -- I just couldn't put it down.

The story begins with the theft of cutting-edge research from the Max Planck Institute in Munich and swiftly moves to India where the stolen research has been patented. A devastating viral illness sweeps across the country taking hundreds of lives, beginning with a well- known cricket player. By chance, a doctor stationed in a rural outpost discovers that the patented drug is a cure for the illness. He shares his knowledge with others and the drug is used nationally to try and stem the devastation. Soon supplies of the drug dwindle as the multinational pharma company tries to create scarcity to drive up prices. A local company that produces generics is engaged by public hospitals to produce a generic version of the drug. The battle commences as the pharma company sues for patent infringement, represented by a leading Silk. The other side is represented by a little-known but brilliant young lawyer. This hero, who is visually impaired, is intimidated and attempts are made on his life when he refuses to withdraw from the patent infringement case.

The manner in which patents should be used in the public interest is meaningfully explored in the facts of the story, the characters' conversations and in the account of the court room battle. The book does a marvelous job of placing these important issues in a real-life setting. The language is clear and engaging, and every reader will shut this book with a better understanding of the issues at stake.

Its an enjoyable read with interesting characters who include a dog who dreams and is infatuated with a stuck- up neighbour's pet, a garrulous legal associate and a flirtatious doctor who finds love in the opposing legal camp. The setting is incredibly rich with references to popular sports like tennis and cricket, significant religious celebrations and social events at the characters' homes. It lightens the seriousness of the legal issues at stake and ensures that the characters are perceived as whole human beings.

The book introduces various other important contemporary IP issues such as celebrity endorsement contracts gone wrong, trade secret misappropriation in the software industry and its epilogue introduces copyright reform issues.

It will ignite a keen interest in IP for the novice reader and provides much food for thought for those knowledgeable about IP. Highly recommended".

Friday, 25 January 2013

Excellent former KatKate
Manning has brought to the attention of the IPKat a recent judgment of
the European Court of Human Rights (ECHR), which has addressed the fashionable,
yet far-from-settled, issue as to the relationship between copyright
and freedom of expression. The case isAshby
Donald and Others v France.The
judgment is available only in French, which is a language this Kat is not tremendously
fluent in - so: bear with me French-speaking readers!

The applicants in this case were three
fashion photographers living in New York, Paris and Le Perreux-sur-Marne,
respectively. Since 1968 French fashion houses have had control over the images
(photographs and videos) taken during their fashion shows. Consequently, those
who wish to use such images need to obtain permission first.

In 2003, the three photographers were
invited to attend a series of fashion shows relating to women’s collections for
autumn/winter 2003-2004. They transmitted the photographs taken at those
events to a corporation named Zepelin, without obtaining the required
permissions first. Zepelin then transferred the images to US corporation
Viewfinder, which eventually published the images on its website and made them
available for free, upon payment of a price, and also for actual sale.

The Paris Court of Appeal held that the fashion houses in question held rights in their
fashion creations. These were "œuvres de l’esprit" (works of the mind) and, as such, were subject to
copyright protection in that they were sufficiently original. As a result, the three photographers were held liable of copyright infringement.

Ashby Donald
and the other two photographers appealed the decision before the French Court de
Cassation, claiming that what they had done was covered by the exception to
copyright infringement for the sake of news reporting and information purposes,
underArticle
122-5 No 9of
the French Code de la Propriété
Intellectuele,and alsoArticle
10("Freedom of Expression") of the European
Convention on Human Rights. The French Supreme Court dismissed the action, so
the three photographers decided to bring their case down to Strasbourg.

The
ECHR declared
their application admissible and not manifestly ill-founded, but concluded on
the merits of the case that the conviction of the applicants because of breach
of the Code de la Propriété Intellectuele did not amount to a
violation of Article 10 of the Convention by the French authorities.

According to the applicants, those fashion photographs
could be classified as information and their reproduction on a website was an
exercise of their freedom of expression, even if the purpose was commercial in
nature. They argued that the public has a
right to be informed about current fashion [Merpel wholeheartedly agrees] and that preventing the
media from disseminating these photographs represented a disproportionate
interference with this right.

... Yes, definitely.

According to the ECHR, the exercise of the freedoms
envisaged by Article 10, eg the freedom to hold opinions and freedom to receive and impart
information and ideas, is subject to duties and responsibilities and may be also
subject to formalities, conditions, restrictions or penalties as are
prescribed by law and are necessary in a democratic society. In particular, a
conviction or any other judicial decision restricting a person’s or an
organisation’s freedom of expression must be pertinently motivated as being
necessary in a democratic society, apart from being prescribed by the law and
pursuing a legitimate aim.

This said, in principle online publication of the photographs in question could have fallen within Article 10 of the Convention. However, the applicants
had been found liable of copyright infringement, pursuant toArticles
L 335-2 and 3of the Code de la Propriété Intellectuele.The
alleged interference with their freedom of expression was therefore prescribed
by the law. In addition, such limitation was compliant with Article 10(2), in
that it was meant to protect the rights of copyright fashion houses whose
designs were the subject of the photographs in question.

A thorough comment on this case has been published on theECHR
Blog. However, it may be worth discussing this
decision under three different lenses:

1. The distinction made by the ECHR between expressions relating to
an issue of public interest and "commercial speech" which is not
intended to contribute to a debate of general interest;

2. Once again, the relevance of fundamental rights to copyright
discourse: see for instance the recent ruling of the Court of Justice of the
European Union in Case C- 70/10Scarlet or Case C-360/10Netlog(here,here,here;

3. The fact that there seemed to arise no fundamental right-related
issues in relation to a broad understanding of copyright scope, as resulting from the protection enjoyed by fashion garments under French law.

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